FASTENER CORPORATION v. Spotnails, Inc.

• Citation: 291 F. Supp. 974
• Decision Date: 23 May 1968
• Docket Number: No. 67 C 821.,67 C 821.
• Parties: FASTENER CORPORATION, Plaintiff, v. SPOTNAILS, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

291 F. Supp. 974

FASTENER CORPORATION, Plaintiff, v. SPOTNAILS, INC., Defendant.

No. 67 C 821.

United States District Court N. D. Illinois, E. D.

May 23, 1968.

Walther E. Wyss and Willis J. Jensen, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., for plaintiff.

I. Walton Bader, Bader & Bader, New York City, Ben Liss, Sonnenschein, Levinson, Carlin, Nath & Rosenthal, Chicago, Ill., for defendant.

OPINION

NAPOLI, District Judge.

Plaintiff brought this action on May 16, 1967, for infringement of United States Letters Patent Nos. 3,094,900; 3,094,901; and 3,141,171. Plaintiff is an Illinois Corporation with its principal place of business in Illinois. Defendant is a New York corporation with an established place of business in this judicial district.

Defendant responded to the original complaint with a motion attacking venue in this district, and moving in the alternative that this action be transferred to the United States District Court for the Eastern District of New York. Further in the alternative, defendant moved for a more definite statement, pursuant to Rule 12(e). Ruling on these motions was withheld to permit both parties to conduct discovery into the venue question. Finally, after extensive discovery into the venue question, it appeared that venue was indeed improper at least as to the 3,141,171 patent. Defendant pressed its contention that if venue is improper as to one of several patent claims being asserted against a defendant, then it is improper as to all claims, including those arising under other patents. Rather than responding to this contention,¹ plaintiff, on January 30, 1968, filed an amended complaint, without leave of Court, in which the claims under the 3,141,171 patent were dropped.

Defendant thereupon moved to strike the amended complaint. In addition to the objections to venue, the suggestion that this cause be transferred to New York, and the motion for a more definite statement, defendant now contends that plaintiff's amended complaint is in reality a withdrawal of a cause of action, which should have been accomplished only by leave of Court, via a motion for voluntary dismissal pursuant to Rule 41 of the Federal Rules of Civil Procedure. Plaintiff, on the other hand, contends that under Rule 15(a) of the Federal Rules of Civil Procedure, it had an absolute right to file this amended complaint, since defendant's responsive pleading was not yet on file.

The Court deems it unnecessary to resolve the alleged ambiguity between rules 15 and 41. Rather, the Court welcomes the simplification of some issues, and the elimination of others, made possible by plaintiff's decision not to pursue his claims under the 3,141,171 patent. The Court finds that no substantial prejudice will be suffered by defendants if the amendment is permitted. Plaintiff is hereby given leave, nunc pro tunc, to file its amended complaint. Motion of defendant to strike the amended complaint is accordingly denied.

Turning to the venue question, the applicable venue provision for patent infringement actions, 28 U.S.C. § 1400 (b), provides,

Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business. (emphasis supplied.)

Plaintiff contends that venue is proper here under the emphasized portion, the second clause of 28 U.S.C. § 1400(b). Since defendant admits that it has a regular and established place of business in Illinois, the Court must determine whether "the defendant has committed acts of infringement" in this judicial district.

In deciding whether or not venue is proper in a patent infringement case, under the second clause of 28 U.S.C. § 1400(b), it should be assumed, for purposes of the venue question, that the devices in question do, as a matter of law, infringe the plaintiff's patents. The relevant inquiry, then, is whether the acts constituting the infringement were committed in the judicial district of the forum. If the allegedly infringing acts were committed in the judicial district of the forum chosen by plaintiff, then the venue question merges with the issue of infringement on the merits, and the motion to dismiss before trial for improper venue must be denied.

In light of these principles, defendant has wholly failed to show that venue in this District is improper. Defendant's affidavits in support of its motion attacking venue go to the merits of the question of whether or not its products infringe plaintiff's patents, not to the question of whether or not the acts allegedly constituting infringement were committed in this district.

With respect to the 3,094,900 patent, the affidavit of Walter J. Barlund, Secretary of defendant Spotnails, Inc., merely states that any allegedly infringing act committed by defendant subsequent to June 29, 1965 was licensed. However, this is a defense on the merits. None of the facts brought out in the Barlund affidavit shows that the acts which allegedly constitute infringement were not committed in Illinois.

With respect to the 3,094,901 patent, Barlund's affidavit of ...